WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AGFA-Gevaert N.V. v. Zachary D Beaver

Case No. D2018-1463

1. The Parties

The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.

The Respondent is Zachary D Beaver of Flippin, Arkansas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <agfahealth.org> is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 2, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 6, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 31, 2018.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on August 16, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The following summary sets out the uncontested factual submissions made by the Complainant:

4.1 The Complainant is a limited liability company, incorporated in Belgium, that is active in the medical sector as a developer of, inter alia, medical software and medical imaging devices.

4.2 The Complainant owns several trademarks for AGFA, including:

(a) European Union Trade Mark Registration no. 016044059 logo (hereinafter, the "AGFA HEALTHCARE mark") for classes 1, 5, 9, 10 and 42, registered on March 22, 2017;

(b) European Union Trade Mark Registration no. 003353463 AGFA, for classes 1, 2, 7, 9, 10, 40 and 42, registered on January 24, 2005; and

4.3 In addition, the Complainant owns a domain name related to its AGFA marks, that being <agfahealthcare.com>.

4.4 The disputed domain name was registered on February 27, 2018. The disputed domain name is not in use as of the date of this decision.

5. Parties' Contentions

A. Complainant

The Complainant contends that it has rights in the trademarks listed in section 4 above and has produced copies of the relevant registration records available online.

The Complainant contends that the disputed domain name is identical or confusingly similar to its AGFA and AGFA HEALTHCARE marks as if it is constituted entirely of the Complainant's AGFA mark with the added word "health". The Complainant further contends that the additional word "health" in the disputed domain name increases the risk of confusion, given the activities of the Complainant.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent has not been commonly known by the name "Agfa" or "Agfahealth" and the disputed domain name is not even in use. The Complainant further states that it has not licensed or otherwise authorized the Respondent to use its trademark or to apply for a domain name incorporating its AGFA mark. The Complainant submits that the Complainant has prior and exclusive rights to the name AGFA.

The Complainant further contends that the Respondent has registered the disputed domain name in bad faith. The Complainant submits that its AGFA mark is famous and predates the disputed domain name registration. As a result, the Respondent could not ignore the pre-existence of the Complainant's trademark rights and the Respondent must have been fully aware when selecting the disputed domain name.

The Complainant further contends that the disputed domain name is similar to its AGFA and AGFA HEALTHCARE marks as well as the Complainant's existing domain name <agfahealthcare.com>. The Complainant submits that this gives rise to the presumption that the disputed domain name was registered primarily for the purpose of selling the domain name to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket expenses directly related to the disputed domain name and/or that it was merely registered in order to prevent the Complainant from obtaining the disputed domain name.

The Complainant alleges that prior to filing the Complaint, the Complainant tried to contact the Respondent. The Complainant contends that the Respondent did not respond at all to the invitation to voluntarily proceed with the transfer and the Complainant submits that this should be interpreted as bad faith on the part of the Respondent.

Furthermore, the Complainant contends that the Respondent's use of the email address listed in the WhoIs for the disputed domain name gives rise to identity theft as it reflects the name of a Junior InHouse Recruiter at the company Agfa Healthcare in Bonn. The Complainant submits that the Respondent is obviously using the name of an Agfa employee to make the registration details appear reliable.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the AGFA and AGFA HEALTHCARE marks. In addition to the European Union trade marks highlighted in the Complainant's submissions, the Complainant has already registered AGFA marks in numerous jurisdictions, including AGFA as a word mark, AGFA as a figurative mark, AGFA in Chinese characters, AGFA in Cyrillic characters, AGFA in Arabic characters, AGFA in Japanese characters and AGFA in Korean characters. In addition, the Complainant has registered AGFA MASTER PRINT, AGFA HEALTHCARE, AGFACOLOR, AGFA-LABS, AGFAPHOTO and AGFAPRESS in numerous jurisdictions.

The Panel is guided by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Under section 1.8 of the WIPO Overview 3.0, it states that:

"Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."

The disputed domain name comprises the AGFA mark in its entirety followed by the word "health" which is descriptive of the Complainant's goods and services. The distinctive feature of the disputed domain name remains the AGFA mark and the additional descriptive word does not serve to avoid confusing similarity between the disputed domain name and the AGFA mark.

As such, the Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to the Complainant's AGFA and AGFA HEALTHCARE marks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name in order to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. Based on the absence of a response and the absence of any nexus between the disputed domain name and the Respondent's name, the Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the disputed domain name. The notoriety of the Complainant's AGFA and AGFA HEALTHCARE marks would present a significant hurdle for the Respondent to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise.

Further, there is also no evidence to indicate that the Respondent is known by the name "Agfa", "Agfa Health" or any combinations thereof.

The Panel takes cognizance that there have also been several WIPO UDRP decisions relating to the AGFA mark whereby the panels recognized the Complainant's rights thereof. These include disputes involving the domain names <agfaxhv.top>; <agfa-be.com>; <agfaroyal.com> and <agfaroyal.net>; <agfasolution.com>; <agfagrafico.com>; <agfaphoto-idv.com>; <agfaz.com>; <aagfa.info>; <agffa.info> and <aggfa.info>; <agfaeu.info>; <agfa.pro>; <aagfa.com>; <agfahcs1.ae>; <agfagraphics.nl>; <agfa.photo>; <agfadigital.info>; <agfafinance.com> and <agfaphotofinance.com>.

In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

As the Panel has determined that the disputed domain name is identical or confusingly similar with the Complainant's AGFA and AGFA HEALTHCARE marks, the Panel agrees with the Complainant's contention that this can give rise to confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on such website. The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant's AGFA or AGFA HEALTHCARE marks when it registered the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was much later than the date the Complainant started using the AGFA or AGFA HEALTHCARE marks and the widespread use of the AGFA or AGFA HEALTHCARE marks by the Complainant at an international level.

Indeed, the Panel takes cognizance of the many jurisdictions that the Complainant has registered AGFA or variations thereof, with some marks having been registered as early as September 9, 1950. As such, the Panel is satisfied that the Respondent had or should have had knowledge of the reputation and goodwill of the AGFA mark when it sought to register the disputed domain name and by including the additional word "health", which is the area of commercial activity of the Complainant, the Respondent is attempting to misrepresent a connection with the Complainant when in fact no such connection existed.

On March 26, 2018, the Complainant sent the Respondent a cease-and-desist letter and requested the transfer of the disputed domain name. The Respondent did not answer. The Respondent's failure to express any denial or explanation despite the opportunity offered to it reinforces the inference of bad faith registration and bad faith use (see Sanofi-aventis v. Above.com Domain Privacy/ Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634).

In addition, the Respondent's use of a Agfa Healthcare employee's name along with the Complainant's AGFA mark in the Respondent's contact email address when there is no evidence of any such connection with that employee (or a similarly-named individual) or AGFA casts significant doubt that the Respondent's registration had been in good faith.

The Panel does not consider it material that an active website has not to date been linked with the disputed domain name, as the Panel finds that the Respondent's passive holding and the surrounding circumstances also establish use of the disputed domain name in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In light of the above, the Panel finds that bad faith has been demonstrated under paragraph 4(b) of the Policy and that the third element of paragraph 4(a) of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <agfahealth.org> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist
Date: August 29, 2018